Ex Parte Fielden

Patent Trial and Appeal BoardSep 28, 2012

11104231 (P.T.A.B. Sep. 28, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 11/104,231 04/12/2005 Brian Fielden 1393 7590 09/28/2012 Clifford Kraft 320 Robin Hill Dr. Naperville, IL 60540 EXAMINER BELLINGER, JASON R ART UNIT PAPER NUMBER 3617 MAIL DATE DELIVERY MODE 09/28/2012 PAPER Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE __________ BEFORE THE PATENT TRIAL AND APPEAL BOARD __________ Ex parte BRIAN FIELDEN __________ Appeal 2009-015150 Application 11/104,231 Technology Center 3600 ___________ Before SCOTT R. BOALICK, MARC S. HOFF, and CARLA M. KRIVAK, Administrative Patent Judges. PER CURIAM. DECISION ON APPEAL Appeal 2009-015150 Application 11/104,231 - 2 - STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1 and 23-25, which stand rejected under 35 U.S.C. § 103(a) as being obvious over Baker 448 (US 1,818,448), Hummel (US 6,296,319 B1), Rubissow (US 2,270,902), and Baker 903 (US 1,769,903). We affirm. THE INVENTION Appellant discloses an electrically insulative gasket for preventing galvanic corrosion of vehicle wheel rims. (Abstract.) In one embodiment, a disk (“gasket 5”) is arranged between a hub (2) and a metal alloy rim (7), thereby preventing the galvanic and corrosive migration of metal ions that would otherwise pass from the rim 7 to the hub 2, 3. (Spec. 9; Fig. 1.) CLAIM 1 Independent claim 1 is reproduced below with emphasis on the system’s included disk. 1. A system for preventing rim corrosion on vehicles where a rim holding a tire is bolted to a hub of dissimilar metal comprising: a metal vehicle rim made from a metal or metal alloy chosen from the group consisting of aluminum, magnesium and nickel, and having a first mating surface, said rim being normally removable from said vehicle; a metal vehicle hub made of steel and having a second mating surface, said hub being normally attached to said vehicle; Appeal 2009-015150 Application 11/104,231 - 3 - a disk containing at least one layer of electrically insulating material sandwiched between said first and second mating surfaces, said disk preventing current flow between said first mating surface and said mating surface; wherein said insulating material is chosen from the group consisting of cork and cork-nitrils. The Examiner finds the claimed rim, hub, and disk to be disclosed by Baker 448’s rim (8), hub (3a), and anti-vibratory disk (7), but acknowledges that Baker 448’s rim and disk lack the claimed metal and cork compositions. (Ans. 3-5.) In view of Hummel’s aluminum rim (1), the Examiner determined that it would have been obvious to likewise form Baker 448’s rim of aluminum. (Ans. 4). In view of Rubissow’s anti-vibratory cork laminate (Fig. 1), the Examiner determined that it would have been obvious to likewise form Baker 448’s anti-vibratory disk from cork. (Ans. 6, 7, and 9.) Appellant argues that Hummel teaches away from the claimed invention by placing an aluminum layer (11), not an electrical insulator, between its rim and hub (20) to prevent galvanic corrosion. (Br. 8.) This argument is not persuasive. “A reference does not teach away […] if it merely expresses a general preference for an alternative invention but does not ‘criticize, discredit, or otherwise discourage’ investigation into the invention claimed.” See DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009). Hummel’s use of the aluminum layer to prevent galvanic corrosion does not discredit the Examiner's proposed use of cork laminate to reduce vibration (as part of Baker 448’s disk 7). Appeal 2009-015150 Application 11/104,231 - 4 - Appellant also argues that the applied prior art cannot suggest the claimed invention because none of the references place an electrical insulator between a hub and rim for the purpose of preventing galvanic corrosion. (Br. 6-9.) This argument is not persuasive. “[T]he law does not require that the references be combined for the reasons contemplated by the inventor.” In re Beattie, 974 F.2d 1309, 1312 (Fed. Cir. 1992). The Examiner presents a different but viable reason for forming Baker 448’s disk of cork, namely to reduce vibration in accordance with Rubissow’s teachings. The Examiner reasonably determined that the proposed use of cork would prevent a galvanic current flow, as claimed. Because the Appellant’s Specification and arguments note the failure of others to prevent galvanic corrosion (Spec. 1-3; App. Br. 7), we in turn note that Appellant has not presented persuasive evidence of satisfying a long-felt need or achieving an unexpectedly superior result. See, e.g., In re Mixon, 470 F.2d 1374, 1377 (CCPA 1973) (long felt need); In re Muchmore, 433 F.2d 824, 826 (CCPA 1970) (unexpected results). We further note that such “secondary considerations of nonobviousness . . . simply cannot overcome a strong prima facie case of obviousness.” Wyers v. Master Lock Co., 616 F.3d 1231, 1246 (Fed. Cir. 2010). Here, the Examiner’s prima facie case for forming Baker 448’s disk from cork, particularly in view of Rubissow’s laminate, is well supported by the similarities of the disk and laminate. Most notably, Baker 448’s disk is directed at reducing vibration and can be formed of “various materials,” including but not limited to “fabric, fibre, wood, laminated wood …, etc.” (Baker 448, p. 1, ll. 5-26 and 74-79; p. 1, l. 87 – p. 2, l. 5.) Rubissow’s laminate also is directed toward reducing vibration and can be formed of “any” material, similarly including Appeal 2009-015150 Application 11/104,231 - 5 - but not limited to felt and cork. (Rubissow, title; p. 3, col. 1, ll. 18-21.) The only appreciable differences are that, in Rubissow’s laminate, the use of cork layers (S1, S2) achieves “especially good results” and the use of an intervening metal layer (W) achieves better results than cork alone. (Rubissow, p. 2, col. 1, ll. 35-60; p. 3, col. 1, ll. 18-21.) In light of this, the proposed use of Rubissow’s laminate – namely the cited Figure 1 laminate of cork (S1, S2) and metal (W) – to form Baker 448’s disk constitutes “the mere application of a known technique to a piece of prior art ready for the improvement.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). For the above reasons, the obviousness rejection of claim 1 is sustained. CLAIMS 23 AND 24 Claims 23 and 24 depend from claim 1. As claims 23 and 24 are not separately addressed by Appellant, the obviousness rejection of claims 23 and 24 is sustained for the reasons stated above with respect to claim 1. CLAIM 25 Claim 25 depends from claim 1 (and intervening claim 24). Claim 25 adds that the disk is formed of a metal layer sandwiched between two insulating layers.1 1 Claim 24 recites the disk as “said gasket.” Because there is no other possible interpretation of “said gasket,” the change of terminology does not render the claim indefinite. See Ex parte Miyazaki, 89 USPQ2d 1207, 1211 (BPAI 2008) (precedential). Appeal 2009-015150 Application 11/104,231 - 6 - The Examiner finds that this feature is met by Baker 448’s modified disk, particularly as formed with the metal layer (W) and cork layers (S1, S2) of Rubissow’s laminate (see supra). (Ans. 4-5.) Appellant argues that “there is no reason to combine Rubissow with the Baker references or with Hummel.” (Br. 10 (original emphasis).) Appellant’s argument is not persuasive. As explained above, the Examiner has presented articulated reasoning with rational underpinning for forming Baker 448’s disk from Rubissow’s laminate (Figure 1). For the above reasons, the obviousness rejection of claim 25 is sustained. DECISION The Examiner’s decision rejecting claims 1 and 23-25 is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED babc